FAQ TRADEMARK PROTECTION

The information on this page may provide the answer to your question about trademark protection. If it does not, or if you would like our advice about a specific subject, please do not hesitate to contact us.

WHY SHOULD I REGISTER MY TRADEMARK WITH KNIJFF?

Registration of a trademark may seem straightforward, but along the way you may find yourself facing some real hurdles. For instance, the Benelux Trademarks Office may send you office action about your trademark applications, you may receive an opposition, or the trademark may be refused by the trademark office. In that case, it is good to know you can rely on experienced trademark attorneys. If the trademarks are registered, you must also make sure that they are protected correctly. A simple typing error in the proprietor’s name or an incorrect or incomplete specification of products or services can have disastrous implications. And that’s exactly what you want to avoid when registering your trademark. It should come as no surprise therefore that an increasing number of registration procedures are being guided by qualified trademark attorneys.

Knijff is an expert in trademark registration thanks to its professional expertise and its many years of experience. We have been working for leading businesses for more than 25 years. At Knijff you can also count on personal attention and an attorney who actually listens to you. We will help you solve intricate questions and problems regarding your trademarks. With our can-do approach, we always look ahead.

HOW DOES KNIJFF GO BY REGISTERING A TRADEMARK?

Do you want to register a trademark? Then let Knijff register your trademark. This is how Knijff will apply for, and register your trademark:

Registering a mark:

First we search the availability of your company name or trademark. That means going through the commercial and trademark registers with a fine toothcomb. In the registers we look for potential objections, and scrutinise any obstacles. A check of the registers of the Chamber of Commerce is also important when registering trademarks.

We then give you a risk assessment and advice about whether or not you can use your company or trademark. We will also tell you what you can do to reduce or remove any risks.

We then advise you on the best registration of the name as a trademark. Important points to consider in this are your future ambitions and budget.

During the final step, we will register the trademark. This is crucial – without registration no trademark right. A trademark right gives you the sole right to particular name and protects against trademark infringements.

After registration we will stay in close contact with you to keep your trademark right up-to-date. This is important to maintain your trademark rights.

WHAT CAN I REGISTER AS A TRADEMARK?

If we say trademark registration, the first thing that probably springs to mind is the registration of the name of a product, service or company. Or the registration of a logo. These are indeed the most common trademark registrations, but there are other possibilities too.

In addition to registering a name or logo, the following elements can also be registered:

ARE ALL TRADEMARKS SUITABLE FOR REGISTRATION?

A legal requirement for the registration of a trademark is that it must be distinctive. Descriptive trademarks cannot be registered. For instance, Euro Rent a Car, as a name for a car rental firm, is too general and therefore not distinctive enough. Also, a name may not be misleading as regards the products or services to which it applies. For instance, champagne can only be called champagne if it comes from the Champagne region. And last but not least, trademarks violating law and order are also refused.
The Benelux Trademarks Office does not refuse trademarks based on a pre-existing right to a trademark. If you were to register Nike for sneakers, it would simply be accepted. Don’t be surprised if you get a cease and desist the very next day though. To prevent you accidentally infringing pre-existing trademark rights, it is important to search a trademark’s availability prior to registration. This will reveal any such risks early in the process.
Once you’ve registered your trademark, it is important that you stay alert for applications for the registration of similar trademarks. If that is the case, you must file an objection yourself. Watching can help in this.

Do you want to know more about availability searches or trademark watching?

WHAT ARE THE PROS AND CONS OF A EUROPEAN TRADEMARK REGISTRATION?

The European trademark registration is an attractive option: it covers a large number of countries for a relatively low fee.

Advantages of a European trademark registration

The European trademark registration currently covers 28 countries and new European member states are automatically added. The biggest advantage of the European trademark registration is that your trademark does not need to be used in every country to maintain your trademark right. Also, a trademark right blocks any counterfeit products being shipped from outside the European Union. Another benefit: the relatively low costs of a European trademark registration.

SeniorityThe European trademark registration can also be used to include any existing national trademark registrations in Europe. This way, all trademark rights continue to apply, safeguarding old protection data. You no longer have to renew these trademark registrations separately. Naturally, this will save you a lot of money without affecting the trademark protection.

Disadvantages of a European trademark registration

Unfortunately, the European trademark right has some disadvantages. Objections may be filed from every country. A national trademark registration of a third party in Spain may present a problem, for instance. Since the European trademark registration is indivisible, this would cancel the entire trademark application. Annoying, but there are some alternatives in that case.

Finally, a European trademark must be used within five years from its registration. This requirement does not mean that you must use your trademark in every European country separately, but it is important to remember that a European trademark registration is not meant for regional use only.

Do you want to know if a European trademark registration could benefit you?

WHAT ARE THE PROS AND CONS OF AN INTERNATIONAL TRADEMARK REGISTRATION?

Besides the Benelux and EU trademark registration systems, there is another system to register a trademark across several countries at once – the International trademark registration. Unlike the name might suggest, this system is not literally a worldwide trademark registration. It is a cost efficient procedure that provides trademark rights across the world in some other non-European countries.

The International system has both some advantages and disadvantages over the European trademark registration system. What would serve you and your trademark best, depends on many factors. We will be happy to discuss these with you.

Advantages of an International trademark registration

The International registration system combines a large number of countries. It enables the registration of a trademark across several countries at once. This is very cost-efficient. Affiliated countries are found all over the world, and include the United States and Japan, but also the European Union. Other countries may also join the system. An important advantage of this system is that a problem in a particular country does not affect another country involved in that registration.

Disadvantages of an International trademark registration

International trademark registration is possible only following a basic registration in one of the affiliated countries. For Dutch companies this is most likely to be a Benelux trademark registration. For the first five years, the Internationale trademark registration then relies on the Benelux trademark registration. If anything affects the Benelux registration during that period, it could also affect the International trademark registration. Also, some trademark offices (even European ones) could refuse trademark registrations if the trademark applied for resembles a pre-existing trademark.

Do you want to know if an International trademark registration would benefit you?